How to impress PTAB judges

Attendees were treated to a rarity at the AIPLA annual meeting – a live Patent Trial and Appeal Board (PTAB) hearing at a conference. The petitioner was Emerson Electric Co, represented by Donald Jackson of Davidson Berquist Jackson & Gowdey. The petitioner is challenging the '314 patent owned by IP Co, represented by Gregory Gonsalves of Gonsalves Law Firm and James Schultz of Troutman Sanders. The patent claims a digital computer network. The PTAB panel consisted of Administrative Law Judges Lynne Pettigrew, Stacey White and Christa Zado.

Following the hearing, the audience received some tips on getting the best results out of hearings from some of the panels' colleagues at the PTAB, who were being probed by moderator William Atkins of Pillsbury Winthrop Shaw.

"It is very important to answer the question the judge asks," offered Judge Jeffrey Fredman. "When answering a question, really do focus on that question." Judge Fredman added that he could, for instance, be asking a question in an effort to convince another judge of his view, "and I am looking to you for ammunition."

Judge Lora Green agreed: "Answer the question that is being asked, and not the question you wish had been asked. If you continually fail to answer the question, it can lead to a bit of disengagement from the panel. They are thinking, 'Why am I here?' I don't think you are being a good advocate at that point."

A big challenge is the short amount of time in a hearing. It is not a good idea to waste the judges' time. "One of my pet peeves is court reporters asking everyone for their name spellings," said Judge Green. "It can be very frustrating."

The tight timeframe can also lead practitioners to get a muddle because they do not get through all their prepared points. "If you come in with 50 challenges you really can't expect to get through them," said Judge Green.

Judge Michael Zecher said lawyers often come in with more than 30 demonstratives, and only get to use about 10. In addition, "it is not an opportunity to raise an issue for first time," he said.

In the live trial, the petitioner lawyer used pre-highlighted printouts while the patent owner lawyer used a slide deck. The judges said both of these approaches are valid. However, getting your points across to remote judges can also be a challenge. "You have to understand they can't see demonstratives or anything like that," said Judge Green. She advised being very clear about which slides you are referring to: "You have to identify very clearly where in the record you are."

When asked how lawyers can put their best foot forward during an argument, Judge Zecher stressed that knowing the record trumps everything. He added that if a lawyer cannot immediately find something the judges are asking about, rather than wasting time trying find it on the spot, "it is OK to say, 'I don't have that at my fingertips but can I get back to you.' But it is very important that you do get back to that a few minutes later!"

It is fine for practitioners to introduce a bit of background in the argument, but judges warn not to overdo it. "I don't think it hurts to have a bit of background, but as you saw today the judges will go very quickly into the questions," said Judge Green. Judge Zecher added: "People sometimes have 15 slides introducing the technology, but I know the technology!"

Judge Fredman gave one more pet peeve: "Don't tell us we don't have to follow precedent. We hear that more often than we should."

Analysing Federal Circuit appeals

Following the panel, Erika Arner of Finnegan gave an overview of PTAB appeals at the Federal Circuit. She said that appeals from the USPTO take an average of 10-11 months from the date of docketing to disposition. This may be creeping up, however.

"I understand there is a bit of a backlog at the moment," said Arner. "The word on the street is that they are a bit behind."

Arner gave statistics for PTAB appeals. There have been 124 Federal Circuit rulings on appeals of final written decision, with an "affirmance rate that is a bit better than it used to be," of 80%.

Of the 99 affirmances, Rule 36 affirmances have been given in 70 – or 70% – of them. "They are usually out about a week from argument. That is great if you on the winning side because it is a quick win," said Arner. It is not so great for the losing side, who have paid money for an appeal and not even received a discussion of why they have not succeeded.

Some important appeals were discussed, including the Supreme Court's Cuozzo decision. The headline in that case was that the court backed the USPTO's use of the broadest reasonable interpretation in claim construction. "But a hint in the case at the time was talking a little bit about the motion to amend practice," said Arner. "The Court sort of skirted that issue. It may have been a guidepost to a future case, which may be coming up."

Arner was referring to the In re Aqua Products appeal. Two questions have been presented in the case regarding the burden of persuasion or production and whether the Board can sua sponte raise patentability challenges. The panel decision in the case affirmed the Board's denial of Aqua's motion to substitute three claims of a patent related to automated swimming pool cleaners. The panel concluded "the Board did not abuse its discretion by denying Aqua's motion to amend."

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